Imagine launching a brand, clearing examination, and even seeing your trademark published, only for the Trade Marks Registry to change its mind months later. That’s exactly what happened in Ashim Kumar Ghosh v. Registrar of Trade Marks (2025). The Delhi High Court’s decision to protect the trademark ‘SoEasy’ marks a broader shift in how Indian courts approach suggestive marks, especially in the wake of Yatra judgment.

Background

1. The trademark ‘SoEasy’ was filed in February 2023 on a “proposed to be used” basis for teaching and printed materials.
2. It was examined, accepted, and published in April 2024, with the condition that the mark be used as a whole.
3. No oppositions were filed during the four-month opposition period.
4. In December 2024, the Registrar unexpectedly issued a notice under Section 19 of the Trademarks Act 1999, proposing to withdraw acceptance on the grounds that the mark lacked distinctiveness. The applicant responded in detail.
5. In May 2025, the Registry issued a refusal notice, maintaining objections under Sections 9(1)(a) and 9(1)(b), arguing that ‘SoEasy’ was merely laudatory and descriptive. The Registry also noted that the acquired distinctiveness had not been demonstrated as per the proviso to Section 9(1), particularly since the application was filed on a proposed to be used basis.

The applicant challenged this order, contending that ‘SoEasy’ was a creative combination of common words that did not directly describe the goods, and that consumers would need to use imagination to connect the mark to the products.

Court’s Decision

The Delhi High Court addressed two key issues:

1. Can acceptance be withdrawn after publication? The short answer is ‘Yes’ as per Section 19 which allows the Registrar to revisit acceptance even after publication. Publication alone does not guarantee registration.
2. Is ‘SoEasy’ descriptive or suggestive? The Court held that the mark ‘SoEasy’ does not directly describe teaching or printed materials. Instead, a consumer must take a mental leap to associate the mark with the goods. This places the mark in the category of ‘suggestive’ and not ‘descriptive’.

As a result, the refusal was set aside and the Registrar was directed to proceed with registration, despite the absence of prior use.

Why This Matters: The Broader Trend

The SoEasy ruling reflects a shift in Indian trademark law, with courts focusing on the overall commercial impression rather than dissecting individual words. Recent cases illustrate this trend:

1. BharatStamp (2025): In Grey Swift Pvt. Ltd. It can be vs. Registrar of Trade Marks, the composite mark combining common words “Bharat” and “Stamp” in relation to goods under class 09 was held distinctive and ‘suggestive’ at best. The Court applied the anti-dissection rule, stressing that marks must be judged as a whole.
2. Royal (2023): In Lt Overseas North America Inc & Anr vs. Krbl Limited, ‘the term ‘ROYAL’, though laudatory, was found to require imagination to connect it to rice, and was thus considered suggestive.

The cases show that the courts are increasingly willing to protect coined or composite marks even if they include common or suggestive words, provided they create a unique brand perception.

The Yatra Contrast: Where the Line Is Drawn

The importance of SoEasy becomes even clearer when read alongside Yatra Online Ltd. v. Mach Conferences and Events Ltd. (2025).

In Yatra, the Court refused exclusivity despite the brand’s popularity and long-standing use. The reason: “Yatra” (in Hindi) literally means journey or travel; a generic term for travel services. Thus, no imagination or mental leap was required. The word described the service itself.

Key distinction:

• ‘SoEasy’: Requires imagination, thus registrable
• ‘Yatra’: Directly references the services provided, thus not registrable.

Together, these cases reinforce that Indian trademark law protects suggestive mark, not genericness, regardless of brand recognition.

Key Takeaways

1. Distinctiveness: Even common words can function as trademarks if combined or presented in a distinctive manner.
2. Mental association: If a consumer must pause before linking the mark to the good/service. In other words, imagination is required to link to the mark is suggestive and registrable.
3. Propose to be used basis: Inherent distinctiveness can justify registration even if the mark is filed on a proposed to be used basis.
4. Generic/Descriptive words remain Risky to adopt: As Yatra demonstrates, popularity and prior use cannot rescue a mark that is inherently non-distinctive, generic or descriptive.

Final Thoughts

The SoEasy judgment signals a brand-friendly approach from Indian courts recognising that effective branding often relies on clever wordplay with everyday language. At the same time, Yatra ruling serves as a firm reminder that the courts are drawing a clear distinction between ‘suggestive’ and ‘descriptive’ marks. The businesses are well advised to adopt marks that are imaginative, suggestive rather than ‘obvious’ as courts remain reluctant to grant monopolies over common words.